Evegate Publishing Ltd v Newsquest Media (Southern) Ltd

Passing off requires goodwill, a material misrepresentation which deceives or is likely to deceive a substantial part of the relevant public, and damage or a real risk of damage. Similarity and low-level confusion are insufficient where descriptive words are commonly used and the public can reasonably distinguish competing publications.

For trade mark infringement, the court must assess the marks globally from the perspective of the legally constructed average consumer, considering the context of use and the mark’s distinctive and dominant features. A descriptive mark may acquire distinctiveness through use, but the evidence must show identification with a particular undertaking.

Evegate published the subscription-based farming magazine South East Farmer and owned a UK trade mark covering periodicals, magazines and newspapers. Newsquest launched the paid-for newspaper The Southern Farmer in 2011 as part of its series of farming titles.

Evegate claimed passing off and infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994. Newsquest counterclaimed for revocation or invalidity under sections 3(1)(b), 3(1)(c) and 3(3)(b), and raised a defence under section 11(2)(b). The central issues were whether the competing title caused actionable deception or trade mark confusion, whether the mark had the necessary reputation and distinctiveness, and whether its use was misleading.

1. Passing off. Evegate established goodwill and reputation in South East Farmer, but that goodwill was limited principally to a glossy magazine distributed by subscription. The relevant public included readers and advertisers interested in farming-related subjects, not only farmers engaged in agricultural production.
2. The names were descriptive, farming publications commonly used geographical indicators, and the relevant public was capable of distinguishing publications by their distribution method, geographical scope, format, typography, masthead, pricing and commercial context. The evidence showed, at most, low-level confusion. It did not establish deception of a substantial part of the relevant public. The passing-off claim was therefore dismissed. Since there was no deception, there was no need to determine damage; in any event, there was no real evidence of actual damage or a real risk of damage.
3. Section 10(2). The registered mark and the sign had to be assessed globally, from the perspective of the average consumer, including readers and advertisers. The use of the sign had to be considered in its actual context. The mark’s descriptive character meant that small differences could suffice to avoid confusion. The differences between the publications and their mastheads meant that the average consumer was not likely to believe that they originated from the same or economically linked undertakings. The section 10(2) claim was dismissed.
4. Section 10(3). Evegate established a sufficient reputation in the relevant geographical area. However, the evidence did not show the necessary link between the registered mark and the Southern Farmer masthead, unfair advantage, detriment, or a serious risk of either. The use was also within the scope of fair competition and, if relevant, was with due cause. The section 10(3) claim was dismissed.
5. The section 11(2)(b) defence did not arise because infringement had not been established. If it had arisen, the use of Southern Farmer would have been descriptive of geographical scope and consistent with honest commercial practices.
6. The counterclaim failed. The evidence of seven or eight years’ use before registration, together with the masthead features and supporting reputation evidence, established acquired distinctiveness despite the descriptive title. There was no actual deceit or sufficiently serious risk of deception under section 3(3)(b). The procedural failure concerning notice to the Comptroller did not justify striking out the counterclaim.